[Federal Register Volume 74, Number 212 (Wednesday, November 4, 2009)]
[Notices]
[Pages 57192-57193]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-26546]


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 INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-630]


Certain Semiconductor Chips With Minimized Chip Package Size and 
Products Containing Same (III); Notice of Commission Determination To 
Review in Part a Final Initial Determination Finding No Violation of 
Section 337; Schedule for Filing Written Submissions on the Issues 
Under Review and on Remedy, the Public Interest and Bonding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review in part the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on August 28, 2009, finding no violation of section 337 of 
the Tariff Act of 1930, 19 U.S.C. 1337, in this investigation.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 205-3042. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street, SW., Washington, DC 
20436, telephone (202) 205-2000. General information concerning the 
Commission may also be obtained by accessing its Internet server 
(http://www.usitc.gov). The public record for this investigation may be 
viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information 
on this matter can be obtained by contacting the Commission's TDD 
terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: This investigation was instituted on January 
14, 2008, based on a complaint filed by Tessera, Inc. of San Jose, 
California (``Tessera'') on December 21, 2007, and supplemented on 
December 28, 2007. 73 FR 2276 (Jan. 14, 2008). The complaint alleges 
violations of section 337 of the Tariff Act of 1930 (19 U.S.C. **1337) 
in the importation into the United States, the sale for importation, 
and the sale within the United States after importation of certain 
semiconductor chips with minimized chip package size or products 
containing same by reason of infringement of various claims of United 
States Patent Nos. 5,663,106 (``the '106 patent' ''); 5,679,977 (``the 
'977 patent' ''); 6,133,627 (``the '627 patent' ''); and 6,458,681 
(``the '681 patent' ''). The complaint names eighteen respondents. 
Several respondents were terminated from the investigation based on 
settlement agreements and consent orders. Two respondents defaulted. 
The following respondents remain in the investigation: Acer Inc. of 
Taipei, Taiwan; Acer America Corp. of San Jose, CA; Centon Electronics, 
Inc. of Aliso Viejo, CA; Elpida Memory, Inc. of Tokyo, Japan and Elpida 
Memory (USA), Inc. of Sunnyvale, CA (collectively, ``Elpida''); 
Kingston Technology Co., Inc. of Fountain Valley, CA; Nanya Technology 
Corporation of Taoyuan, Taiwan; Nanya Technology Corp. USA; Powerchip 
Semiconductor Corporation of Hsinchu, Taiwan; ProMOS Technologies, Inc. 
of Hsinchu, Taiwan; Ramaxel Technology Ltd. of Hong Kong, China; and 
SMART Modular Technologies, Inc. of Fremont, CA. The `681 patent was 
terminated from the investigation prior to the hearing.
    On August 28, 2009, the ALJ issued his final ID, finding no 
violation of Section 337 by Respondents with respect to any of the 
asserted claims of the asserted patents. Specifically, the ALJ found 
that the accused products do not infringe the asserted claims of the 
`106 patent. The ALJ also found that none of the cited references 
anticipate the asserted claims and that none of the cited references 
render the asserted claims obvious. The ALJ further found that the 
asserted claims of the `106 patent satisfy the requirement of 35 U.S.C. 
112, first, second and fourth paragraphs. Likewise, the ALJ found that 
the accused products do not infringe the asserted claims of the `977 
and `627 patents and that none of the cited references anticipate the 
asserted claims of the patents. The ALJ further found that the asserted 
claims of the `977 and `627 patents satisfy the definiteness 
requirement of 35 U.S.C. 112, second paragraph, and that Respondents 
waived their argument with respect to obviousness. The ALJ also found 
that all chips Respondents purchased from Tessera licensees were 
authorized to be sold by Tessera and, thus, Tessera's rights in those 
chips became subject to exhaustion, but that Respondents, except 
Elpida, did not purchase all their chips from Tessera licensees.
    On September 17, 2009, Tessera and the Commission investigative 
attorney filed petitions for review of the ID. That same day, 
Respondents filed contingent petitions for review of the ID. On October 
1, 2009, the parties filed responses to the various petitions and 
contingent petitions for review.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the final ID in part. 
Specifically, the Commission has determined to review (1) the finding 
that the claim term ``top layer'' recited in claim 1 of the `106 patent 
means ``an outer layer of the chip assembly upon which the terminals 
are fixed,'' the requirement that ``the `top layer' is a single 
layer,'' and the effect of the findings on the infringement analysis, 
invalidity analysis and domestic industry analysis; (2) the finding 
that the claim term ``thereon'' recited in claim 1 of the `106 patent 
requires ``disposing the terminals on the top surface of the top 
layer,'' and its effect on the infringement analysis, invalidity 
analysis and domestic industry analysis; (3) the finding that the 
Direct Loading testing methodology employed by Tessera's expert to 
prove infringement is unreliable; and (4) the finding that the 1989 
Motorola OMPAC 68-pin chip package fails to anticipate claims 17 and 18 
of the `977 patent. The Commission has determined not to review the 
remaining issues raised by the petitions for review.
    The parties are requested to brief their positions on the issues 
under review with reference to the applicable law and the evidentiary 
record. In connection with its review, the Commission is particularly 
interested in responses to the following questions:
    1. Would the accused products infringe the asserted claims of the 
`106 patent if construction of the claim term ``top layer'' does not 
encompass only a single layer? Please cite record evidence and/or 
relevant legal precedent to support your position.
    2. Did the patentees of the `106 patent expressly disclaim the 
embodiment described in Figure 7 of United States Patent No. 5,148, 265 
(``the `265 patent'')? How would that affect the infringement analysis 
of the asserted claims of the `106 patent? See `106 Patent Prosecution 
History (JX-167) June 24, 1996, Office Action and

[[Page 57193]]

December 24, 1996, Amendment; `265 patent (JX-2) at column 14, lines 
19-34; FIG. 7. Please cite record evidence and relevant legal authority 
to support your position.
    3. Does Dr. Qu state anywhere in the record that he relied on his 
direct loading testing methodology to independently prove infringement 
of the asserted claims of the `977 and `627 patents by the accused 
packages? Please cite only record evidence.
    4. Was Dr. Qu's demonstrated stress relief in the solder balls of 
the accused packages due to terminal-to-chip displacement caused by the 
applied external load? Please cite only record evidence.
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent(s) being required to cease and desist from engaging in 
unfair acts in the importation and sale of such articles. Accordingly, 
the Commission is interested in receiving written submissions that 
address the form of remedy, if any, that should be ordered. If a party 
seeks exclusion of an article from entry into the United States for 
purposes other than entry for consumption, the party should so indicate 
and provide information establishing that activities involving other 
types of entry either are adversely affecting it or likely to do so. 
For background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
Parties to the investigation, interested government agencies, and any 
other interested parties are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the recommended determination by the ALJ on 
remedy and bonding. Complainants and the IA are also requested to 
submit proposed remedial orders for the Commission's consideration. 
Complainants are also requested to state the dates that the patents 
expire and the HTSUS numbers under which the accused products are 
imported. The written submissions and proposed remedial orders must be 
filed no later than close of business on Friday, November 13, 2009. 
Reply submissions must be filed no later than the close of business on 
Friday, November 20, 2009. No further submissions on these issues will 
be permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof on or before the deadlines stated above with 
the Office of the Secretary. Any person desiring to submit a document 
to the Commission in confidence must request confidential treatment 
unless the information has already been granted such treatment during 
the proceedings. All such requests should be directed to the Secretary 
of the Commission and must include a full statement of the reasons why 
the Commission should grant such treatment. See 19 CFR Sec.  210.6. 
Documents for which confidential treatment by the Commission is sought 
will be treated accordingly. All nonconfidential written submissions 
will be available for public inspection at the Office of the Secretary.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in sections 210.42-210.46 and 210.50 of the Commission's Rules of 
Practice and Procedure (19 CFR *Sec.  210.42-210.46 and 210.50).

    By order of the Commission.

    Issued: October 30, 2009.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E9-26546 Filed 11-3-09; 8:45 am]
BILLING CODE 7020-02-P